If some regular Joe registered the domain name of…let’s say…nikeforums.com and just used that domain name to put up message forums about Nike products and didn’t try to make any money from the domain name, how much trouble could he get in?
I would guess he’d be getting a few cease and desist letters once NIke found out, but would Nike legally be allowed to sue him? My guess would be “yes”, but I’d like to here the dope on this issue.
No legal information here, but I own about two hundred domain names, including some that list companies names. From what I understand, as long as you are not using that name acting as though you are that company or to deceive or fraud the public or company, you should be fine. You have Mercedes-Benz official websites and you have Mercedes-Benz forums that in now way are associated with Mercedes-Benz, and they have been around for years.
You also might have nike.com as an official site authorized by Nike and another site called cheapnikesneakers.com that is no way associated with the actual company, but is just a smaller company selling Nike, and it is perfectly legal.
I am sure someone will come with actual laws specifying what is legal and what is not.
Thanks, FormerMarineGuy. That’s the impression I got from the little bit of info that I could find on the subject. You know what would be great? An online law library. I’d love that.
I suggest reading the Uniform Domain Name Dispute Resolution Policy (UDRP).
This is ICANN’s policy but I don’t think it carries the force of law. In the earlier days of domain names the major source of domain name suits was trademark infringement. The obligation of a trademark holder to vigorously attack misuse of the trademark led to such silly things as Archie Comics (or whoever owns them) suing a man who registered a domain in the name of his young daughter Veronica. I used to be with Network Solutions and we bent over backwards to stay out of the middle of these things despite efforts to draw us in.
There is no law that I know of writen to specificaly define an illegal use of a domain use.
The group that assigns domain names is not a government entity. After they make a decision, that somebody doesn’t like, it has to be taken to court and argued that it breaks a lwa like coppyright. Breaking the rules that have been listed, generaly ends in the hlder of the name losing the domain, and it being given to the other party. The large companies get pissed, when they can’t get a name away from the person the has the same name and has had it since 1998. A case like that is normaly ruled in favor of the person and they have to buy him out, or cry to a judge. The person sitting on it for no other reason than to deprive a compant from using the name, normaly loses the dispute.
Try reading up on fair use: link
Also for a practical application, here’s an interesting read.
So far I’ve not been sued by an evil organization whose “sucks” domain I own and use, although that’s not to say that it can’t happen. I’d win at great personal expense, I feel. (No, I won’t point it out here.)
The thing is, those are protected uses of a trademark. Nikeforums could be a protected use per the first link, depending on its purpose. But then nikes-for-cheap could be seen as not fair use, since the owner is probably trying to profit on the Nike name, which isn’t protected.
Finally, you can be sued for just about anything at any time, whether you’re right or wrong.
Here is a 1999 article about a site Karl Rove and George W. Bush tried to shut down.
I checked, it’s still up.
The Anticybersquatting Consumer Protection Act of 1998, 15 U.S.C. Sec,. 1125(d)(1)(A), states:
Furthermore, the use of a domain name is governed by the general trademark infringement provisions of Title 15, which prohibit uses of a mark that are likely to cause confusion with someone’s trademark.
Pretty much none of this is true.
(1) See my cite to the ACPA and to the Lanham Act in general.
(2) You don’t have to go to private arbitration if you don’t want to; you can go straight to federal court under the ACPA.
(3) Companies have generally been very successful in getting domain name registrations cancelled or transferred under arbitration systems of the UDRP model.
(4) COPYRIGHT LAW HAS NOTHING TO DO WITH IT for Pete’s sake. This is a trademark issue.
(5) In very general terms, if you don’t have some kind of legitimate claim on the terms used in a domain name, then the company that owns the relative mark will be able to get it away from you. Criticism sites are somewhat more successful, but usually only if the domain name clearly could not be seen as being sponsored by the company. For example “ihatewalmart.com” or “walmartreallyscrewedme.com” have better chances of surviving an ACPA claim than “walmartinfo.com.”
If it’s clear that you’re using a domain name because of its association with the trademark holder – unless you have a legitimate purpose such as criticism – then it’s very likely that the trademark holder can get it away from you.
I am not your or your friend’s lawyer. If you have real legal concerns you should consult a qualified lawyer in your jurisdiction. However, I have some general impressions about this issue. Generally speaking, when you’re talking about a domain name registration, “getting in trouble” is not usually the issue. Usually the issue is that you get the attention of the domain name holder and they demand that you surrender the registration. If you refuse (depending upon the specific circumstances), they usually have a very good chance of getting a court to order cancellation or transfer of the domain name registration.
Very often, the key issues are bad faith (for actions under the ACPA) and likelihood of confusion (for trademark infringement actions). From the cases I’ve seen, my quick guess is that nikeforums.com is a loser, because Nike has a very good argument that the public is going to assume that a Web site with that domain name is sponsored or owned by Nike. Something like “sneakerforums.com” or “footwear.com” avoids this kind of argument. Also, something like “nikesucks.com” has a slightly better chance, because there exists an argument that no one is going to think that a Web site with a name like that is sanctioned by Nike. Still, the “sucks” cases have been very uneven and there’s no guarantee of success.
I would guess he’d be getting a few cease and desist letters once NIke found out, but would Nike legally be allowed to sue him? My guess would be “yes”, but I’d like to here the dope on this issue.
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Owning lots of domain names that include marks in which you have no legitimate interest is considered – under the UDRP and under the ACPA – prime evidence that you’re up to no good. If somebody brings an action against you, your list of registrations is quite likely to be used against you.
It’s not that simple. If someone comes along and has a legitimate trademark that you’ve registered then they’re also going to have an argument that you have no good reason to be using their mark in your domain name. And it’s not just intentional deception or fraud (bad faith) that can get you in trouble. The key test under standard trademark law is “likelihood of confusion” and that can happen whether or not you’re being intentionally fraudulent.
Domain names are relatively new in the view of the legal system, so things are still developing. However, when trademark owners do bring complaints, they have a very high rate of success against people who are using their marks in domain names without permission. In one of the most famous cases, Volkswagen got vw.com away from a company called Virtual Works, who even had a plausible argument that it was based on their own company’s name. But, no, the court said, in the eyes of the public, “VW,” means Volkswagen and you’re just trying to misdirect traffic to your site.
Not necessarily. In fact, probably not. In most cases I’ve seen, when the actual trademark owner complains, the retailer does not get to keep the domain name. It’s okay to advertise on your site that “I sell Nike brand sneakers,” but putting it in your domain name when you have no legitimate interest in the mark is very chancy.
This reminds me of the story of Dennis Toeppen.
This guy had balls. He registered panavision.com, panaflex.com, and lufthansa.com, amongst others. I don’t think he would ever admit it, but his sole objective was to extort money from the companies whose registered trademarks he had so wrongly infringed upon.
He claimed to the contrary, sure. When Panavision dragged him into court, he pointed to his panavision.com website - which hosted aerial photographs of Pana, Illinois - as a ligitimate use of such a domain.
The Ninth Circuit Court didn’t see it that way, and nailed him for “trademark dilution.” Unfortunately, Panavision was unable to get the death penalty, so this guy is still out there somewhere.